Transactions involving virtual goods and trademark applications for virtual goods are on the rise. Consequently, KIPO has adopted special guidelines for examining virtual goods (the "Virtual Goods Examination Guidelines") that went into effect on July 14, 2022. Notably, the Virtual Goods Examination Guidelines indicate that virtual goods are presumptively different from real world goods and virtual goods previously described as downloadable image files. This means that KIPO will not automatically reject applications for virtual goods based on trademarks for real world goods or trademarks for downloadable image files. Thus, we recommend filing trademarks for the virtual goods corresponding to your real world goods/services as soon as possible before your mark is registered by a third party.
The key points of the Virtual Goods Examination Guidelines are as follows:
1. Virtual Goods Description Requirements
The broad description of "virtual goods" by itself will not be accepted. Instead, the product type must be specified, for example, "downloadable virtual apparel," "virtual shoes," etc. However, the term "virtual goods" may be used in a descriptive manner to help describe the relevant goods/services, for example, "virtual world computer program in which virtual goods are recorded."
2. Classification of Virtual Goods
Virtual goods generally belong to International Classification 9 (which includes downloadable virtual goods). Thus, KIPO added new Similarity Codes specifically for virtual goods as a way to help distinguish and examine virtual goods (Similarity Codes are classifications used by KIPO to subdivide categories of broadly-similar goods and services, such that goods designated under the same Similarity Code are generally found to be similar for trademark registration purposes). More specifically, the Similarity Codes for virtual goods differ based on their corresponding real world goods.
The below table provides examples of Similarity Codes for virtual goods:
|Examples of Virtual Goods
For services utilizing a virtual environment, the Similarity Code will be based on the purpose of the service. The below table provides examples of Similarity Codes for virtual services:
|Examples of Virtual Goods
|Furniture sales agency using the Metaverse
|Advertising agency in a virtual world
|Music performance business using a virtual environment
3. Determination of Similarity
The Virtual Goods Guidelines provide that when comparing virtual goods, they will be presumed similar if the corresponding real-world products are similar. However, virtual goods falling within the same Similarity Code may still be found dissimilar depending on the characteristics of the goods.
Notably, trademarks for virtual goods will be presumed dissimilar to their real world counterpart goods until a court precedent establishes otherwise. However, an application for a virtual product may be rejected based on a real world good, if the mark is a well-known or famous mark. Additionally, virtual goods and services will be presumed dissimilar to prior registrations for virtual goods based on a "downloadable image file" description. Examples showing how virtual goods will be compared are provided below:
|Between Virtual Goods
|Virtual Pants vs. Virtual Apparel
|Since real pants and apparel are similar, corresponding virtual products are also presumed to be similar.
|Virtual Safety Helmet vs. Virtual Apparel
|Since real safety helmets and apparel are dissimilar, corresponding virtual goods are also presumed dissimilar.
|Between Virtual Goods and Downloadable Image Files
|Virtual Goods vs. Downloadable Image File Containing Virtual Goods
|Virtual goods and downloadable image files are presumed dissimilar even if the image file contains virtual goods.
|Between Virtual Goods and Real Goods
|Virtual Shoes vs. Shoes
|Virtual goods and real-world goods are presumed dissimilar.
As noted above, since virtual goods are presumptively dissimilar to their counterpart real world goods and downloadable image files, we encourage you to apply for your virtual goods trademarks as soon as possible.